Ex parte DEBE

Board of Patent Appeals and Interferences

May 18, 1999

08072182 (B.P.A.I. May. 18, 1999)

Application for patent filed June 3, 1993. According to1
the appellant, the application is a division of Application
No. 07/681,332, filed April 5, 1991, now U.S. Patent No.
5,238,729.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK K. DEBE
____________
Appeal No. 95-4966
Application No. 08/072,1821
____________
ON BRIEF
____________
Before JOHN D. SMITH, PAK and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 15 through 18 and 20
through 22, which are the only claims remaining in this
application.
Appeal No. 95-4966
Application No. 08/072,182
2
According to appellant, the invention is directed to a
method of making a composite article with an electrically
conductive surface comprising the steps of providing whisker-
like structures on a substrate, encapsulating these
structures, and delaminating this layer of encapsulated
structures from the substrate (Brief, page 4).
Claims 15 and 17 are illustrative of
the subject matter on appeal and are reproduced below:
15. A method for preparing a composite article having an
electrically conductive surface comprising the following
steps:
(a) providing conductive whisker-like structures on a
substrate, wherein said whisker-like structures form an array
of discrete microstructures and have an areal number density
of
40-50/µm and are perpendicular to said substrate;2
(b) encapsulating said microstructures with an
encapsulating material, wherein a layer comprising
encapsulated microstructures in produced; and
(c) delaminating said layer from said substrate to
expose a surface on said layer, such that at the surface of
said layer, one end of said microstructures is exposed, and
that the end of said microstructures that is exposed and the
surface of said layer are coincident on a common side of said
layer.
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Application No. 08/072,182
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17. The process according to claim 15, wherein the
whisker-like structures are provided on the substrate
according to the following steps:
(a) vacuum vapor depositing an organic material onto the
substrate to a coating thickness in a range of 50-2500
Angstroms; and
(b) heating the deposited organic material under vacuum
for a period of time until the deposited organic material
forms discrete oriented whisker-like structures 0.1 to 2.5 µm
in length.
The examiner has relied upon the following references as
evidence of obviousness:
Debe 4,812,352 Mar. 14, 1989
Perrotta et al. (Perrotta) 4,892,693 Jan. 9, 1990
Claims 17 and 20 stand rejected under 35 U.S.C. § 112,
first paragraph, for having no support in the original
specification (Answer, page 3). Claims 15-18 and 20-22 stand
rejected under
35 U.S.C. § 103 as unpatentable over Perrotta in view of Debe
(Answer, page 4). We affirm the examiner’s rejection under §
112 but reverse the rejection under § 103 for reasons which
follow.
OPINION
Appeal No. 95-4966
Application No. 08/072,182
The range “0.05 to 0.25 micrometers” is equivalent to2
“500 to 2500 Angstroms” since 1 Angstrom is equal to 10-10
meters. See Hackh’s Chemical Dictionary, 3rd ed., p. 57, The
Blakiston Co., Inc. (1953).
4
A. The Rejection under § 112, First Paragraph
Appellant does not contest the examiner’s final rejection
of claims 17 and 20 under the first paragraph of § 112 (Brief,
page 7). Therefore we summarily affirm the examiner’s
rejection. We note that the claimed coating thickness of “50-
2500 Angstroms” is not equivalent to the original disclosure
of a coating thickness of “0.05 to 0.25 micrometers” (see the
specification, page 14, lines 19-20).2
We further note that appellant has “rewritten” claim 17
in the Appendix to the Brief with --0.05 to 0.25 micrometers--
substituted for “50-2500 Angstroms” (Brief, page 7). The
examiner states that this “proposed” amendment would overcome
the rejection under the first paragraph of § 112 but this
amendment has not been properly submitted and has not been
entered (Answer, page 7). Any “proposed” amendment to
appealed claim 17 is not before us. Our affirmance of this
rejection is based on claim 17 as presented in the Amendment
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Application No. 08/072,182
5
dated Sept. 28, 1994 (Paper No. 10) and as before the examiner
in the Final Rejection dated Dec. 5, 1994 (Paper No. 11).
For the foregoing reasons, the rejection of claims 17 and
20 under 35 U.S.C. § 112, first paragraph, is affirmed.
B. The Rejection under § 103
The method of appealed claim 15 recites three steps to
prepare a composite article with an electrically conducting
surface: (a) providing conductive whisker-like structures on a
substrate wherein the whisker-like structures form an array of
discrete microstructures and have an areal density of 40-
50/square micron and are perpendicular to the substrate; (b)
encapsulating these microstructures to form a layer comprising
encapsulated microstructures; and (c) delaminating said layer
from said substrate to expose a surface on said layer, with
one end of the microstructures being exposed.
The examiner finds that “Perrotta et al. teaches the
basic claimed process . . . of providing filaments (ie.
whisker-like structures) on a substrate; encapsulating the
filaments with an encapsulating material to form a composite
on the substrate; and delaminating the composite from the
substrate.” (Answer, page 4). The examiner also finds that
Appeal No. 95-4966
Application No. 08/072,182
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“Debe discloses a process for forming substantially
perpendicular organic whiskers on a substrate by vacuum vapor
depositing a thin . . . layer of organic material onto a
substrate” (Answer, page 5). The examiner concludes that it
would have been obvious “to use the method disclosed in Debe
to produce the structures on the substrate in Perrotta et al.
in view of the nonlimiting statement therein that the growths
can be formed on the substrate by ‘a number of different
processes such as the Gas Phase Method . . .’ and the
reference to ‘Other methods’ at col. 3, line 39.” (Answer,
page 6).
Appellant argues that Perrotta requires the filaments to
be substantially uni-directional in a direction other than
perpendicular to the substrate while the structures recited in
appealed claim 15 are perpendicular to the substrate (Brief,
page 8). Appellant also argues that there is no teaching or
suggestion or knowledge generally available in the art that
would lead a person skilled in the art to make the proposed
combination of Perrotta and Debe (Id. at pages 8-9).
“When a rejection depends on a combination of prior art
references, there must be some teaching, suggestion, or
Appeal No. 95-4966
Application No. 08/072,182
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motivation to combine the references. [Citation omitted].” In
re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). When determining the patentability of a claimed
invention which combines several elements, “the question is
whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making
the combination. [Citations omitted].” In re Rouffet, 149
F.3d at 1356, 47 USPQ2d at 1456. It is noted that evidence of
a suggestion, teaching or motivation to combine may come from
the prior art references themselves, the knowledge of one of
ordinary skill in the art, or from the nature of the problem
to be solved. See Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed.
Cir. 1996).
The examiner’s evidence of a suggestion to combine the
process of Debe to make the microstructures on the substrate
of Perrotta is the teaching in Perrotta that
Substrates with the preferred single-crystal
filament growths on them can be manufactured by
a number of different processes, such as the Gas Phase
Method, the Gas-Liquid Solid Method, the Evaporation
Method, and the Replication Method. (Column 2,
lines 61-65, see the Answer, pages 5-7).
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Application No. 08/072,182
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The examiner also cites Perrotta, column 3, line 39, (see the
Answer, pages 6-7) for the following disclosure:
Other methods may be difficult to classify. For
example, U.S. Pat. No. 3,011,870 may be an example
of the Gas Phase Method or the Gas-Liquid-Solid Method.
We do not find, on this record, that the examiner has
shown that the prior art, as a whole, would have suggested the
desirability of making the combination as proposed by the
examiner. The examiner has not shown on this record why one
of ordinary skill in the art would have used the deposition
and vacuum annealing process of Debe in place of the numerous
methods disclosed by Perrotta (see Perrotta, column 3, lines
14-47). The examiner has not cited any evidence that the
method of Debe falls within the specific methods taught by
Perrotta. We find that a plain reading of the examiner’s
evidence cited from Perrotta is insufficient to establish a
suggestion that any other method of depositing microstructures
on a substrate (such as disclosed by Debe) could be
substituted for the methods taught by Perrotta.
Furthermore, the filaments of Perrotta are in a
“direction other than perpendicular to the substrate” (column
2, lines 52-54, and claim 1) while the microstructures of Debe
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Application No. 08/072,182
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and the claimed method are perpendicular to the substrate (see
Debe, column 4, lines 36-38). The examiner states that only
the embodiment of Fig. 6 in Perrotta is drawn to filaments in
a direction other than perpendicular to the substrate while
the general disclosure of Perrotta teaches that “[t]he fibers
can be aligned” (Answer, page 8).
Perrotta teaches aligning a plurality of the
filaments in substantially the same direction since the
substrate originally bears crystalline random filaments
(column 2, lines 29-33). This alignment is accomplished by
rolling and compressing the filaments to orient the filaments
in the general direction of the applied force (column 6, lines
58-60, and Figures 6 and 7). The examiner has not shown any
disclosure or teaching in Perrotta pertinent to the
manufacture of filaments that are perpendicular to the
substrate (see Figures 1 through 5). Accordingly, Perrotta
alone would not have suggested to the artisan the formation of
perpendicular microstructures on a substrate. The only
disclosure of forming microstructures perpendicular to the
substrate occurs in Debe and the examiner’s proposed
Appeal No. 95-4966
Application No. 08/072,182
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combination of Debe and Perrotta fails for reasons discussed
above.
For the foregoing reasons, we determine that the examiner
has not presented a prima facie case of obviousness in view of
the applied prior art. Accordingly, the rejection of claims
15-18 and 20-22 under 35 U.S.C. § 103 as unpatentable over
Perrotta in view of Debe is reversed. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
C. Summary
The rejection of claims 17 and 20 under 35 U.S.C. § 112,
first paragraph, is affirmed. The rejection of claims 15-18
and 20-22 under 35 U.S.C. § 103 as unpatentable over Perrotta
in view of Debe is reversed.
The decision of the examiner is affirmed-in-part.
Appeal No. 95-4966
Application No. 08/072,182
11
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART

JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
jrg
Appeal No. 95-4966
Application No. 08/072,182
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3M Office of Intellectual Property Counsel
P.O. Box 33427
St. Paul, MN 55133-3427